Appeal from the examiner's decision refusing to allow claims 1, 2 and 7 through 13. Claims 3 through 6, which are the only other claims remaining in this application, stand withdrawn from further consideration by the examiner.

Claims 1 and 2 are representative:

1. A process for preparing chlorotrifluoromethylbenzene which comprises reacting chlorotoluene, hydrogen fluoride and chlorine in a gaseous phase in the presence of a catalyst selected from the group consisting of <<alpha>>?? Illegible Text??-aluminum fluoride, <<alpha>>??Illegible Text??-aluminum fluoride carrying one or more salts of iron, bismuth, tin and lead, and chromium (III) oxide or partially fluorinated chromium (III) oxide carrying alkali metal fluoride.

The issue presented for review is whether the examiner correctly rejected claims 1, 2 and 7 through 13 under 35 USC 103 as unpatentable over Hiramatsu in view of Ohsaka, Nakagawa, Petit, and Mitchell.

OPINION

We shall not sustain this rejection.

Initially, we note from a review of Paper No. 3 mailed May 10, 1983, that the examiner here required the appellants 'to elect a single disclosed species for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable.' See Paper No. 3, page 3. The appellants, in turn, elected the catalyst species <<alpha>> ??Illegible Text??-aluminum fluoride. Instant claims 1 and 7 through 13 embrace the use of <<alpha>>>>>> ?? Illegible Text??-aluminum fluoride in appellants' claimed process, whereas instant claim 2 is specifically limited to a process using that catalyst species. As appellants point out in their main Brief before us, '[t]he rejections of record and now on appeal are specifically directed to the applicants' elected species and prosecution on the merits has not been expanded to the other species encompassed by applicants' generic claims'. See the main Brief, page 7.

*2 Otherwise stated, the specific issue presented for review is whether appellants' claimed process, conducted in the presence of <<alpha>> ??Illegible Text??- aluminum fluoride catalyst, would have been obvious within the meaning of 35 USC 103 in view of the prior art references cited and relied on by the examiner. We discuss that single issue infra, and we take no position respecting the patentability of appellants' claimed process conducted in the presence of the remaining, non-elected species.

Whereas the examiner cited and relied on five prior art references, Hiramatsu and Ohsaka clearly represent the closest prior art in this case. Hiramatsu discloses the same gaseous phase fluorination process claimed by appellants, except that Hiramatsu conducts his process in the absence of a catalyst. Ohsaka, on the other hand, relates to a catalytic process. Specifically, Ohsaka discloses the reaction of benzotrichloride or its derivatives with hydrogen fluoride in a gaseous phase in the presence of aluminum fluoride as a catalyst. Respecting the aluminum fluoride catalyst, Ohsaka states

The aluminum fluoride used as the catalyst in the process of the invention may be produced by any conventional procedure. There is no limitation on its crystalline form. In general, <<beta>> ??Illegible Text??-aluminum fluoride or <<gamma>> ?? Illegible Text??-aluminum fluoride, or their mixture is favorably used.

See Ohsaka, column 2, lines 35 through 40. The working examples disclosed by Ohsaka are all conducted in the presence of a mixture of <<beta>> ??Illegible Text??- aluminum fluoride and <<gamma>> ??Illegible Text??-aluminum fluoride.

The remaining references relied on by the examiner, namely, Nakagawa, Petit, and Mitchell, do not add to the teachings of Hiramatsu and Ohsaka. This follows because: (1) the particular reaction disclosed by Nakagawa is conducted in the absence of a catalyst, and (2) the catalytic reactions disclosed by Petit and Mitchell (the former relating to hydrofluorination of acetylenic hydrocarbons and the latter relating to reforming reactions) are clearly more remote from the gaseous fluorination reaction disclosed by Hiramatsu than is the reaction disclosed by Ohsaka.

From the foregoing we conclude that if the examiner established a prima facie case of obviousness of claims 1, 2 and 7 through 13, then his case is best founded on and expressed in terms of the combined teachings of Hiramatsu and Ohsaka. However, we find it unnecessary to decide whether the examiner did, in fact, establish a prima facie case. Assuming arguendo, without deciding, that he did, we conclude that (1) appellants' rebuttal evidence of record establishes unexpectedly superior results possessed by <<alpha>> ??Illegible Text??- aluminum fluoride when used in the claimed process, and (2) the rebuttal evidence establishes that appellants' claimed process, when considered as a whole, would have been non-obvious within the meaning of 35 USC 103.

*3 More specifically, we have reviewed appellants' 'indirect comparison' between the use of <<alpha>> ??Illegible Text??-aluminum fluoride in Example 1 of their specification and <<beta>> ,<<gamma>>-??Illegible Text?? aluminum fluoride in the Ohsaka declaration, Paper No. 7 filed August 9, 1984. See In re Fenn, 639 F.2d 762, 208 USPQ 470 (CCPA 1981). This comparison between the claimed invention and the closest prior art shows that, unexpectedly, the claimed process using <<alpha>>-?? Illegible Text?? aluminum fluoride provides substantially increased yields of desired product and relatively small amounts of undesirable by-products. On the contrary, when <<beta>> ,<<gamma>>-?? Illegible Text?? aluminum fluoride is used, the result is substantially decreased yields of desired product and relatively high amounts of undesirable by-products. Such results could not have been predicted from the Ohsaka reference of record, which discloses different crystalline forms of aluminum fluoride but provides no basis for a person having ordinary skill in the art to expect superior results from the use of the <<alpha>> ??Illegible Text??-crystalline form. Nor could the results shown by appellants have been predicted from any of the prior art references relied on by the examiner.

In addressing the Ohsaka declaration, the examiner states that

the declaration was carefully considered as well as appellants' arguments and was and is held unconvining [sic] of unobviousness of the present process for the reasons given in support of the conclusion of obviousness. Any results appellants obtain are inherent in the clearly obvious use of <<alpha>> > > >> ??Illegible Text??-aluminum fluoride as claimed, optimization thereof being well withint he [sic] expected ability of one of ordinary skill in the art.

See the Examiner's Answer, pages 5 and 6. The flaw with this approach is that the examiner has, in practical effect, converted a rebuttable presumption into a conclusive or irrebuttal presumption of obviousness. The examiner incorrectly reverts to his initial conclusion of obviousness, finding the declaration evidence unconvincing 'for the reasons given in support of the [initial] conclusion'. Moreover, we note the examiner's assertion that the declaration results are 'inherent' in the use of <<alpha>> ??Illegible Text??-aluminum fluoride. The examiner does not assert, nor would he have basis on this record to assert, that the superior results obtained by using <<alpha>> ?? Illegible Text??- aluminum fluoride and shown in the Ohsaka declaration are expected. The rejection here is based on section 103 and appellants are entitled, if they choose, to file and rely on rebuttal evidence. As stated in In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976), '[w]hen prima facie obviousness is established and evidence is submitted in rebuttal, the decision-maker must start over . . . An earlier decision should not, as it was here, be considered as set in concrete'. Again, as stated in In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) 'the examiner must consider all of the evidence anew'.

*4 The examiner's decision refusing to allow claims 1, 2 and 7 through 13 is reversed.